Official -Subject to Final Review - Home - Supreme Court ...argument next in Case 16-341, TC...

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Official - Subject to Final Review

IN THE SUPREME COURT OF THE UNITED STATES

- - - - - - - - - - - - - - - - - x

TC HEARTLAND LLC, :

Petitioner : No. 16-341

v. :

KRAFT FOODS GROUP BRANDS LLC, :

Respondent. :

- - - - - - - - - - - - - - - - - x

Washington, D.C.

Monday, March 27, 2017

The above-entitled matter came on for oral

argument before the Supreme Court of the United States

at 11:09 a.m.

APPEARANCES:

JAMES W. DABNEY, ESQ., New York, N.Y.; on behalf of

the Petitioner.

WILLIAM M. JAY, ESQ., Washington, D.C.; on behalf of

the Respondent.

Alderson Reporting Company

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C O N T E N T S

ORAL ARGUMENT OF PAGE

JAMES W. DABNEY, ESQ.

On behalf of the Petitioner 3

ORAL ARGUMENT OF

WILLIAM M. JAY, ESQ.

On behalf of the Respondent 24

REBUTTAL ARGUMENT OF

JAMES W. DABNEY, ESQ.

On behalf of the Petitioner 53


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P R O C E E D I N G S

(11:09 a.m.)

CHIEF JUSTICE ROBERTS: We will hear

argument next in Case 16-341, TC Heartland v. Kraft

Foods.

Mr. Dabney.

ORAL ARGUMENT OF JAMES W. DABNEY

ON BEHALF OF THE PETITIONER

MR. DABNEY: Mr. Chief Justice, and may it

please the Court:

The Court in this case is presented with an

historic choice. That choice is between upholding or

destroying venue protections that Congress provided in

28 U.S.C. 1400(b), and that this Court interpreting that

statute declared to exist in its Fourco Glass decision.

And the correct choice, we submit, is to adhere to this

Court's existing, long-established interpretation of

Section 1400(b) and to reject the new call for a new

revisionist interpretation that would render Section

1400(b) nugatory in this case and in all but the most

unusual cases.

I'd like to open first with some undeniable

points. In Fourco Glass, this Court made two holdings

about 1400(b) that control this case. The first is this

Court interpreted Section 1400(b) as a standalone. It's


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the sole and exclusive provision governing venue in

patent cases and is not to be supplemented with Section

1391.

JUSTICE SOTOMAYOR: How can that be when in

Brunette we said that 1391 governed aliens, the

definition of aliens? So that broad statement we

couldn't have meant.

MR. DABNEY: What the Court held in Brunette

was that venue legislation had, since the beginning of

the Republic, been extended only to United States

domestic persons and that the then-existing 1391(d) of

Title 28 was not a venue rule at all, but rather was a

codification of a principle that dated back to 1789 that

aliens were simply outside the scope of all venued laws.

JUSTICE SOTOMAYOR: So what do we do with

unincorporated associations?

MR. DABNEY: What we do

with unincorporated --

JUSTICE SOTOMAYOR: Those are -- those are

not defined by 1400.

MR. DABNEY: Well, 1400(b) in Fourco was

held to apply to all defendants. That was one ground on

which this Court held in Fourco that 1400(b) was

standalone, precisely because its predecessor had

applied to any person, corporation, or partnership. And


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there was never any practical issue interpreting 1400(b)

as in litigation involving limited partnerships and even

unincorporated nonperson associations, because the

linchpin of 1400(b) and its predecessor was domicile.

When you have a venue rule that keys to

domicile and specifically distinguishes between a

domiciliary and a non-domiciliary, then the problems

that the Denver and Rio Grande case addressed and that

Respondent brings up as hypothetical problems simply

didn't exist.

It's noteworthy that in -- in the

Respondent's brief, they don't cite a single real world

example where there was any problem interpreting and

applying Section 1400(b) ever since the Sperry v.

American --

JUSTICE GINSBURG: Is there --

MR. DABNEY: -- Railroad case.

JUSTICE GINSBURG: Is there any other

provision, venue provision in which a venue for a

corporation is only the place of incorporation?

MR. DABNEY: Where venue for a corporation

is only the place of incorporation. I cannot stand

here, Your Honor, and identify -- it could very well be

that there is one, and that's a very good reason why

when Congress amended 1391 in 2011, they put that broad


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exception language in.

JUSTICE GINSBURG: Well, don't you

suppose -- even for diversity purposes, a corporation

is -- is diverse based on not simply its place of

incorporation, but its principal place of business.

Principal place of business counts. It doesn't count

under 1400.

MR. DABNEY: Well, since 1948, that has been

the general rule that 1391(c) has provided. 1391(c) has

said for 60-odd years that a corporation, regardless of

its domicile, will be deemed to be resident in this

district, that district, that district. And that has

been a feature of general venue law since 1948. The

whole point here is that -- that rule was urged upon

this Court. In the Fourco Glass case, the Court

considered statutory language that was not materially

different in this respect from current 1391 and held

that 1400(b) when it says the judicial district where

the defendant resides, that means domicile. That means

where --

JUSTICE GINSBURG: Again, whatever it said

in Fourco, it was not based on any statute. It was

based on the common law: Where is the corporation

domiciled?

MR. DABNEY: Well, I would respectfully


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disagree with that. The word "resides" in the statute

was a statutory term, and it had a very well-established

meaning at the time of the statute's enactment. And

this Court held one of the specific issues in this case

is, did the word "resides" in -- in 1400(b) signal a

change from the word "whereof he is an inhabitant" in

Section 48 of the 1911 judicial code. And this Court

held those words were synonymous. It meant domicile,

and there can only be one of those. There's only --

JUSTICE KAGAN: What do --

MR. DABNEY: -- one domicile.

JUSTICE KAGAN: What do you think Congress

would have to do to reverse our decision in Fourco?

MR. DABNEY: Well, there are many ways that

it could be done. And -- and in 2001, the American Law

Institute proposed that Section 1400(b) be repealed.

JUSTICE KAGAN: Is there any way Congress

could do it without repealing 1400?

Is there any change that Congress could make

to 1391 that would have that effect.

MR. DABNEY: I could imagine that if instead

of saying "except as otherwise provided by law," the

statute said "notwithstanding any other provision of

law, this would govern." That would be a way to do

that. But --


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JUSTICE KAGAN: That -- that would do it?

In other words, your argument in the end rests on that

"except" provision?

MR. DABNEY: It rests importantly on the

"except" provision. The "except" provision makes this

case an easier case than Fourco Glass was because at the

time of Fourco Glass, all you had was the general venue

statute and the very specific tailored, historic venue

statute that had been dating back to 1897. And so in

that case, the Court used the standard tools of

statutory construction and said, you know, the specific

statute is not going to be swallowed up and rendered

nugatory by the more general, and it applied the kind of

reasoning that the Radzanower case did. Radzanower v.

Touche Ross is a very, very analogous case to this.

But now that Congress has specifically

provided not that 1391 overrides 1400(b), but that 1391

yields, is subordinate to other statutes and common law

that -- that provide otherwise for venue, that makes

this case just easy to apply.

JUSTICE GINSBURG: But -- but Congress also

said in 1391(c) that it was defining residency for all

venue places -- all venue purposes.

MR. DABNEY: And the prior statute said for

venue purposes. So, yes, the word "all" was added.


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Respondent has not identified any venue purpose that was

not covered by the original version of 1391(c) that now

is covered by 1391(c).

What we never had before 2011 was a statute

that subordinated 1391(c) to other venue provisions.

And we encourage the Court to read pages 31 and 32 of

Respondent's brief, because you don't get up until -- it

isn't until you get to page 31 that Respondent can even

bring itself to address the exception clause, which is

so clearly fatal to their position. They talk about all

means all means all means all for the first 30 pages.

And then finally we get to page 30 and 31, and what do

they say? Well, they say, well, the "except" language.

The "except" language has nothing to do -- this is on

page 32 -- the "except" language in Section 1391(a) has

nothing to do with the definition in 1391(c); quote,

"Those definitions do not govern venue," unquote.

Well, that directly contradicts what they

say on page 8 of their brief, which states, quote, "The

new -- Section 1391(c) now governs for all venue

purposes."

So the plain meaning of "govern" applies to

1391(c) by their own characterization. They're the ones

who are saying that 1391(c) governs venue in this case,

which is what they say on page 8, and then they try to


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do this acrobatic maneuver to escape the exceptions

clause by saying it doesn't govern. Well, as we say in

our reply brief, the plain meaning of "govern" means

that 1391(c) is part of the sections that in the

structure of 1391 is subordinated to the exception

language.

So the -- the Court doesn't need to do

anything here except say that Fourco's interpretation of

1400(b), which under Kimble v. Marvel and statutory

precedence of this Court, it is as much a part of that

statute as the words originally were, that that is part

of the law that everyone agrees provides for a venue

otherwise than what the Respondent is arguing for.

The Respondent is arguing that 1400(b)

should now be given an artificial meaning imported from

1391(c). That is the exact argument that the Respondent

made in the Fourco case. The -- the Petitioner in

Fourco was a -- a West Virginia corporation who was

alleged to reside in the Southern District of New York

when it didn't actually reside, because the argument

was, it's deemed fictitiously to reside in New York

under 1391. And the Court said, in the context of

1400(b), which distinguishes between resident and

nonresident defendants, you can't import that synthetic,

fictitious definition of "resides" without destroying


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both the text of the statute and completely defeating

its purpose.

1400(b) was enacted to restrict where patent

cases could be filed, and what we've seen in the Federal

search that's experiment since 1990 is a very good

demonstration of why patent cases need a venue statute

like 1400. If you don't have a venue statute like

Section 1400, you get the kind of litigation experiences

that are set out in the amici briefs.

The -- the law professor's brief noted that

there's a single judge in the United States that has

one-quarter of all patent cases in the United States on

his docket. This is a situation that cries out for

nothing more than upholding the venue protection that

Congress provided and that this Court announced in

Fourco, and that Congress took a very careful look at in

2011, and decided to --

JUSTICE KAGAN: But, Mr. Dabney, I mean, one

oddity of this case is -- is usually, when we say

something, when we issue a decision, we can be pretty

confident that Congress is acting against the backdrop

of that -- that decision. But I think that that would

be an odd thing to say in this case, given that for 30

years the Federal Circuit has been ignoring our decision

and the law has effectively been otherwise. And then


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the question is, well, what is the backdrop against

which Congress is legislating.

It seems actually that if -- if I were a

congressman, I'd think that the practical backdrop

against which I'm legislating is not Fourco; it is

instead the Federal Circuit's decision in VE Holding,

which is the decision that the practice has conformed

to.

MR. DABNEY: Well, I -- I can tell the Court

from someone who does practice that not everyone ever

acceded to VE Holding. And I think, if you look at what

actually happened in the 2011 act, it seems to me that,

in 2011, Congress took steps that indicated that they

didn't get the memo, that this Court's decision in

Fourco Glass was a nullity and that -- and that its

disregard by lower courts had somehow become the law of

the land.

First, VE Holding, the 1990 decision of the

Federal Circuit, had seized upon a prepositional phrase

in a 1988 version under this chapter. So if Congress

was thinking, oh, what I want to do is lock in a

situation in which an enormous, extreme controversial

imbalance in Federal patent litigation that goes to a

very small number of victics, it was an odd thing for

Congress to have repealed the very grab-hold that --


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that the Federal Circuit had seized on to justify its

results.

So I would argue that the legislation that

Congress passed, far from ratifying that holding, very

intentionally abrogated it. Not only that, in

September, three months before the 2011 act was passed,

Congress amended the America Invents Act to provide for

a new restriction on what could be deemed a regular and

established place of business under 1400(b). Section

18(c) of the AIA says that an automated teller machine,

an ATM, shall not be deemed a regular and established

place of business. Now, I suppose the Respondent would

say that that -- that provision was not inserted at the

behest of New York money center banks; that -- that

provision was put in at the behest of individuals who

didn't even form an LLC or a corporation so that they

would enjoy the protection alone.

JUSTICE KENNEDY: Well, wasn't that statute

before the 1400 was enacted?

MR. DABNEY: It was --

JUSTICE KENNEDY: I mean that -- that case.

MR. DABNEY: That -- that amendment was done

in September of 2011 by the same Congress, three months

before Congress declined to accept the American law --

JUSTICE BREYER: I don't quite see -- two


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things; one, you can comment on it or not, but these

amici briefs, and -- they're filled with this thing

about a Texas district which they think has too many

cases. What's this got to do with this? As far as I

can see, if we're supposed to decide what's good or bad,

maybe you'd lose. But I -- I don't know whether that's

good, bad, or indifferent. Okay? But is there some

relevance to it?

And the second thing that I'd like to know

is you are not a corporation. So since you are not a

corporation, why do we have this case here deciding?

And what are we supposed to do about that? We don't

normally decide cases because Mr. Smith would like us to

decide a case involving a corporation. He's not a

corporation, nor are you. So what do we do?

MR. DABNEY: Well, let me respond in -- in

two ways. First of all, from -- from the Petitioner's

point of view, the relevance of litigation behaviors in

the United States is important evidence of why

Section 1400(b) was a wise statute that Congress passed

and that it should be upheld. Not -- not --

JUSTICE GINSBURG: Well, why, when you --

you're complaining about a -- a forum that's friendly to

infringers. If you've -- many corporations are

incorporated in Delaware. That's also said to be a


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friendly forum.

MR. DABNEY: There -- there has never been,

in any other field of law, such a disparity between

patent infringement case filings and other case filings

in other areas of law. And -- and that --

JUSTICE BREYER: You can go into that if you

want. As far as that -- might be other people are

interested in that. But I really feel I need an answer

to my second question.

MR. DABNEY: Can you remind me what that --

JUSTICE BREYER: That is, you're asking us

to decide where venue is proper for a corporation, and

you are not a corporation. Therefore, on what basis are

we supposed to decide that?

MR. DABNEY: That -- that's not a correct

statement of our position. 1400(b) is not restricted to

corporate or individual or other defendants --

JUSTICE BREYER: Is there a holding that it

includes you?

MR. DABNEY: There's a holding in Fourco

that it applies to all defendants, all -- italicized

all. Justice Whitaker said all in italics.

JUSTICE BREYER: Including a person.

MR. DABNEY: Including a person. Including

a partnership, including an unincorporated said


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partnership. The -- the predecessor statute to -- to

1400(b) specifically said partnership.

So this was never a problem for patent

cases. It was always that all defendants, all types of

defendants were covered by the statute. So that has not

been a question that's ever been raised throughout this

case, and -- and the beauty of this is Judge Learned

Hand's opinion in the -- in the Sperry case, in 132

F.2d., it dealt with the hardest case of all.

TC Heartland is a chartered entity. It has

a charter, and you can tell where its principal place of

business is by just looking it up in a public record.

Learned Hand dealt with the hardest of all situations of

what do we do with an unincorporated association that

isn't an entity. The Association of American Railroads

that had no entity status at all, and Judge Learned Hand

in that case held -- which had been a rule applied

across the board in patent cases without problem -- that

for a nonperson, an association that was a nonperson, we

look to the -- the -- we -- we treat the inhabitants as

being where the principal place of business is located.

But to -- to reiterate, the statute has

always applied to unincorporated entities, the patent

venue statute has, and the Respondent has not pointed to

a single real world --


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JUSTICE KENNEDY: Well, where does this

unincorporated entity reside?

MR. DABNEY: In Indianapolis, Indiana.

JUSTICE KENNEDY: No other place?

MR. DABNEY: No other place.

JUSTICE KENNEDY: What -- what do we look

to, to confirm that? What -- what --

MR. DABNEY: The corporate charter of the

company, it so happens to --

JUSTICE KENNEDY: No, no. What -- what law

do we look at to see where an LLC resides?

MR. DABNEY: Under this Court's precedence,

the Court has looked to State law to determine where the

residence of a juristic person created by a State is

located, and so --

JUSTICE GINSBURG: Suppose the State would

say we count the principal place of business as well.

MR. DABNEY: It -- well, some states might

do that, but the States always require that the domicile

to be in the State.

So in this case -- in this case it's a very

straightforward case because the -- the -- the public

office, that is, its legal domicile under Indiana law,

is in Indianapolis. But -- but it is an Indiana -- it

is an Indiana domicile question under any -- under --


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under anybody's interpretation.

So unless there is some fictitious meaning

given to 1400(b) imported from another place, this is an

easy case. There's -- there's -- the -- the Petitioner

has no offices in Delaware, it has no regular

established place of business in Delaware, and there's

really not much more to say about that.

There's -- there's one other point that I'd

like to bring up, and that is that 1400(b) was enacted

together with a Federal service of process statute found

today in 28 U.S. 6 -- U.S.C. 1694. And it authorizes

services of process in patent cases that are commenced

in a district where the defendant is not a resident, but

has a regular and established place of business. And

there is another demonstration that, in this context,

"resident" means domicile, and Federal law specifically

provides for nationwide service of process on

nonresident defendants.

So the key point I'd just like to leave you

with is, for more than 100 years, a patent venue has

been a function of the domicile of a defendant, and it

provides for an easy-to-administer, clear rule that

prescribes where venue is -- is permissive in a patent

case.

JUSTICE KAGAN: Well, but for more than 30


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years the practice has been the other way. I mean,

I'm -- I'm -- I was thinking as I was reading the

briefs, sometimes we have accidental theme days at the

Supreme Court. So today's accidental theme is: When 30

years of practice goes against you, what happens?

(Laughter.)

MR. DABNEY: I -- I -- I heard Justice

Souter say something like that in the KSR case, you

know, the teaching-suggestion-motivation test has been

around so long that, at some point, the mistake becomes

the law. And -- and this Court has again and again and

again stood up for its authority to declare what the law

is.

On -- on issues of patent law, there's

actually a precedent, Andrews v. Hovey that says no

issue of patent law is settled until we have settled it.

In Dickenson v. Zurko, there's a tremendous

administrative law -- body of law that this Court said

the Federal Circuit was wrong in the way it --

JUSTICE GINSBURG: Well, maybe the Federal

Circuit was wrong in not following Fourco, but the

question is now before us, and you are asking us to say

that venue in a patent infringement case is only where

the entity is incorporated or comparable to that, and

you have acknowledged that there is no other venue


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provision for any other kind of claim that is so limited

to just the place of incorporation.

MR. DABNEY: Well, I -- I would -- I would

respectfully disagree because what 1400(b) does is it

provides a different way to define venue for nonresident

defendants. 1400(b) isn't restricted just to the

district where the defendant is domiciled. 1400(b)

provides not the expansive regime that 1391(c) does, you

know, anyplace where, you know, someone could

constitutionally summon you into court. 1400(b) says

you have to have a regular and established place of

business and commit an act of infringement.

Now, that's the choice that Congress made.

That is a different venue prescription than what 1391(c)

provides. And there is very good reasons. I could sit

here, and -- and as -- as someone who tries patent

cases, I could tell you, there's a reason why patent

litigation is -- has characteristics that make it much

more susceptible to the kind of forum shopping that some

of the amici have done because the injuries at issue in

patent litigations don't grow out of some tangible --

you know, a train wreck or some tangible loss where --

where it tends to bring the litigation to the place of

the injury.

The injury claimed in patent litigation


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usually is -- is a synthetic nonreceipt of a reasonable

royalty that allegedly is due, and -- and that can be

marketed and sold and transmitted into a forum. There's

all kinds of reasons why 1400(b) is an important law to

enforce and uphold.

If there are no further questions, I'd like

to reserve the rest of my time.

CHIEF JUSTICE ROBERTS: Thank you, counsel.

JUSTICE BREYER: Well, I do, actually.

MR. DABNEY: Okay.

CHIEF JUSTICE ROBERTS: Not so fast.

(Laughter.)

JUSTICE BREYER: Now, as long as you have a

minute, maybe you could indulge me and trace me through

this. With a corporation, I think 1400 says resides,

where the defendant resides.

MR. DABNEY: Correct.

JUSTICE BREYER: But then that incorporated

Section 48. And Section 48 said where the defendant is

an inhabitant.


JUSTICE BREYER: And now "inhabitant," how

do we know that means where the incorporation is

incorporated or something? What does that mean in the

case of -- how do we know that that -- that that word


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"inhabitant" means what you think it means?

What do you think it means?

MR. DABNEY: Because Fourco said that.

Fourco said --

JUSTICE BREYER: And Fourco is going really

into whether 1391(c) or -- whether they made an

exception, whether they included that, and it says no.

It's a very short opinion.

MR. DABNEY: 1400(b) is the relevant part of

Fourco --

JUSTICE BREYER: Yeah.

MR. DABNEY: -- is on page 226 --


MR. DABNEY: -- where the Court says, by an

eight-to-one vote, characterizing the change from

Section 48, in the middle of the page, quoting the

revisor's notes, words in subsection (b), "where the

defendant resides" were substituted for "of which the

defendant is an inhabitant" because the words

"inhabitant" and "resident" as respects venue, are

synonymous.

And then there's this parenthetical, "We

pause here to observe that this treatment, and the

express reason for it, seems to negative any intention

to make corporations suable in patent infringement cases


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where they are merely doing business because" --

JUSTICE BREYER: Yeah. It says in respect

of corporations, it means the state of incorporation

only.


JUSTICE BREYER: But you are not an

incorporation, so I'm back to my first question.

MR. DABNEY: The -- the treatment of

domiciles of -- of chartered entities has, under this

Court's precedence and under universal practice --

JUSTICE BREYER: And so I should look at

what case?

MR. DABNEY: We cite the Troutwine case as

a -- as an Indiana case --

JUSTICE BREYER: Okay. Okay.

MR. DABNEY: -- in our brief as an -- as an

example of that.

JUSTICE KENNEDY: But I thought you said it

depended on what -- that the State can define residence

in a different way.

MR. DABNEY: Well, States will tell --

JUSTICE KENNEDY: With respect to LLCs.

MR. DABNEY: When a State creates a legal

person, a juristic, jural entity, the State will

prescribe where its -- its legal domicile is. And --


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and that is a -- that is a matter of public record. So

it's an easy thing to find out.


Mr. Jay.

ORAL ARGUMENT OF WILLIAM M. JAY

ON BEHALF OF THE RESPONDENT

MR. JAY: Mr. Chief Justice, and may it

please the Court:

If I may, I'd like to offer a different

theme for today, and that would be definitions rather

than the 30-year point that Justice Kagan posited.

Congress has written a definition of

"residence" that applies for all venue purposes.

CHIEF JUSTICE ROBERTS: Well, but I mean --

yes, there's a difference between for venue purposes,

and for all venue purposes, and for venue under this

chapter, but this is something fairly significant in the

area of patent law. And I would have thought that if

Congress were trying to make a significant change,

there'd be a lot more evidence of it other than just

changing the particular nuances of -- of the words.

MR. JAY: Well, of course, Mr. Chief

Justice, it isn't here a change from "for venue

purposes" just to "for all venue purposes." There are,

I think, four changes in between the Fourco text and the


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text today. And in between, you had the statute

construed in VE Holdings which said "for purposes of

venue under this chapter."

CHIEF JUSTICE ROBERTS: But there's no real

evidence of any -- including in the nuances you talk

about -- of such a significant change.

I mean, the -- we can't get -- we can't get

rid of this issue. I mean, we tried in -- in Stonite

and then in Fourco. It just sort of keeps coming up.

And -- and I would have thought, when you have -- well,

I mean, is our Fourco decision law?

MR. JAY: Fourco -- the principles by which

Fourco interpret the statutes are still good law --

CHIEF JUSTICE ROBERTS: Well, then the --

MR. JAY: -- but the definition that Fourco

applied is no longer the controlling definition of

"residence."

CHIEF JUSTICE ROBERTS: Okay. Well, the

current statute says "except as otherwise provided by

law." And I would have thought that excluded

overturning the Fourco decision.

MR. JAY: So, I don't think so, Your Honor.

And I think that the function that "except as otherwise

provided by law," I'd like to illustrate what work that

is doing in the statute, and then I would like to


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explain why nothing, in fact, "otherwise provides by

law" in 1400(b).

So if you look at the appendix to the red

brief, pages 3A to 4A, and then again 5A to 6A, these

are the old statutes. So this is the '88 version and

then it would actually be the '52 version. And, you

know, from the '48 recodification.

"Except as otherwise provided by law" has

been in the statute since the '48 recodification. Where

was it? It was in the general venue provision, and it

was in the diversity venue provision, (a) and (b) of

1391. So that's right in the carryover on --

JUSTICE KENNEDY: Is that the end, and then

later it's going to be -- it's going to be moved to the

beginning.

MR. JAY: That's right. So now that there

is -- there aren't separate statutes anymore for general

venue, diversity venue, and local action venue, which

was 1392, all of that's now in 1391(b). And this

"except as otherwise provided by law" language, which

has always been there, has now been put in 1391(a). And

if you look at why the American Law Institute drafted it

just that way, because it's just the way that the ALI

drafted it that Congress adopted, you will see that --

both from the ALI report and also from page 18 of the


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House report, that the purposes of this "except as

otherwise provided by law language" is to, quote,

"follow current law." It wasn't intending to overrule

VE Holding at all.

Now, my friend on the other side --

CHIEF JUSTICE ROBERTS: No -- but it wasn't

intended to overrule VE Holding, but I suspect it wasn't

intended to overrule Fourco at all either. And Fourco

is a decision of this Court.

MR. JAY: It certainly is, Your Honor. But

I do think that Fourco is based on two things, and I --

those things are no longer the case in the statute. Let

me walk through that.

So Fourco is based on two things. Number

one, the fact that 1400 was recodified in the 1948

revision of the Judicial Code. And if there isn't a

change specified in the revisor's notes, the Court said

it will not read that change in, even though,

ordinarily, when Congress makes a change in language,

this Court's presumption is the opposite. The Court's

presumption is that Congress means to do something by

its change, not in the recodification context. Now we

don't have the recodification context anymore.

The other thing is the specific and the

general canon. This Court said that 1391(c), as it then


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existed, was clearly a general corporation venue

statute, and so it was. It provided where a corporation

could be sued. It doesn't do that anymore. 1391(c) is

now a purely definitional provision, and it was adopted

specifically to clear up a number of the nagging

problems that the members of the Court have been asking

my friend about, including where do you sue an

artificial entity that is not a corporation? Where does

it reside.

Justice Breyer, the answer to your question

is in this -- this Court's decision in Denver and Rio

Grande from 1967. Now, my friend says, well, that's a

general venue case. But I think the salient point is

that the Court said in that case, there is -- there was

no settled construction of the law on where an

unincorporated association resides in 1948, and there is

none yet.

CHIEF JUSTICE ROBERTS: Did you raise the

significance of the fact that it was an unincorporated

association in your brief in opposition?

MR. JAY: No, Your Honor, because we don't

think that it matters because the definition now applies

to all business entities; corporations, and LLCs.

The --

CHIEF JUSTICE ROBERTS: It seems odd to me


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you didn't raise it in your brief in opposition, and yet

it takes up several pages in -- in your brief on the

merits.

MR. JAY: Because it's relevant to our

statutory interpretation, that our interpretation, but

not the other side's, would clear up this issue and save

the Court from having to confront in another case where

does an LLC reside.

JUSTICE BREYER: Why another case?

MR. JAY: -- in another case --

JUSTICE BREYER: I mean, look -- look.

You -- if you -- if you're right, you win. That's the

end of the case. If you're wrong, then you have another

point, and that is that Fourco doesn't apply really to

unincorporated associations. So why isn't the right

thing to do for us to decide the issue, if you win,

that's the end of it; and if you lose, you send it back

and we say to the lower court, if you haven't forfeited

the point, maybe you could raise it and argue it.

Is that the correct way to handle this?

MR. JAY: I think that that's fine, Your

Honor. I do think that --

JUSTICE BREYER: That's fine. That's the

correct way to handle it?

MR. JAY: Yes, simply because -- because we


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think, of course, that we win. And one reason that we

win --

JUSTICE BREYER: Obviously, you think you

win. And -- and.

MR. JAY: Yes.

JUSTICE BREYER: -- and --

(Laughter.)

JUSTICE BREYER: Look. I -- I'm -- I'm not

worried about it if you win. What I'm worried about

what to do is if you lose.

MR. JAY: Right. And so I agree with what

Your Honor just said. But I -- but the -- the question

about what to do with LLCs and what to do with

defendants who don't reside in the United States -- this

goes to Justice Sotomayor's question -- is a big part of

why -- why the ALI working with the Judicial Conferences

Committee on Federal-State Jurisdiction proposed a

statute that would resolve these ambiguities in the

naked word "resides" or "resident" --

JUSTICE KAGAN: But I thought the ALI -- and

you -- you rely upon it in your briefs a lot and you

rely on it here. I mean, the ALI wanted to get rid of

1400, and Congress didn't do that.

MR. JAY: That's right. But its -- its

proposal to clear up the ambiguities in the word


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"resident" or "resides" for all venue purposes, the ALI

explained in its report at page 188 and 189, and then

Congress then, in the House Report at page 20, echoed it

almost exactly. The reason to -- the work that is --

the work that the words "for all venue purposes" do is

to provide that these definitions shall apply not just

to the general venue statute, but to all venue statutes,

general or special. And the House Report says the same

thing on page 20, even though, of course, as you said,

the House didn't repeal 1400. And we're not saying that

14 --

JUSTICE BREYER: In -- special or there are

lots of different ones. But did it say, if you pass

this, don't worry about getting rid of 1400, because

this gets rid of it? I mean, did they say anything like

that at all?

MR. JAY: No. Because 1400 still serves a

function.

JUSTICE BREYER: Well, I mean, getting rid

of Fourco.

MR. JAY: Oh. Well, that's a different --

that's a different --

JUSTICE BREYER: Did it say anything --

MR. JAY: Well, but -- but -- but

JUSTICE BREYER: I mean -- when I used to --


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maybe this was years ago. This said, don't worry about

repealing 1400. If you pass this, you will be rid of

the Supreme Court's interpretation in Fourco. Or

anything like that.

MR. JAY: What it said, Your Honor, is that

the Federal Circuit's decision in VE Holding was it

called it a partial palliative. It said that the work

needed to be finished, because VE Holding addressed

corporations based on the statute as it -- corporate

defendants, based on the statute as it then was, but

that the work needed to be carried forward in the

definition for, number one, corporate plaintiffs, where

do they reside; and, number two, unincorporated

defendants, where do they reside? And that's what this

cross-cutting, all-purpose definition was intended to

do.

But for the -- I think it's important to

note that under our view, 1400(b) does do work. It is

the venue statute. So you have to show either that the

defendant reside -- all defendants reside there, or all

defendants are subject to suit there under the other --

under the second half. That's different from what the

general venue statute provides, which, for example, can

base venue on the residence of only one defendant.

There is significance; there is work left to be done for


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1400(b). But it doesn't define --

JUSTICE GINSBURG: And -- and -- because I

thought that the only thing that left was to govern a

suit against an individual.

MR. JAY: Well, a suit against an individual

would still -- would be more likely to trigger the

second half of the statute. But in deciding what is the

proper venue, the first thing you do is you look at

which is the right venue statute? In this case, it's

not the general venue statute 1391(b); it is the special

venue statute for patent cases, 1400(b). Now, that

doesn't define "resides." "Resides" is defined to "all

venue purposes" somewhere else. It's in 1391(c). And

so for "all venue purposes," that's the definition you

apply. Now, when the defendant is --

JUSTICE SOTOMAYOR: I'm sorry, Mr. Jay.

(B) gets really subsumed by (a) -- 1400(b),

the second part of it, gets subsumed by 1391. There's

no -- you keep saying there's work for this, but I --

where?

MR. JAY: So the second half, I agree, does

not have much work left to do, except in cases where the

defendant's an individual. So I think that that -- that

by itself means that the second half is not surplusage.

JUSTICE SOTOMAYOR: No, but --


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MR. JAY: But let me answer that --

JUSTICE SOTOMAYOR: But you would have

specific jurisdiction if the person committed an act of

infringement and has regular established place of

business. Presumably, they're doing business in that

State by doing the act of infringement.

MR. JAY: But the -- for an individual

defendant, Justice Sotomayor, the definition isn't based

on personal jurisdiction. It's based on their domicile.

JUSTICE SOTOMAYOR: Tell me what patent case

we've ever had an individual sued that wasn't an agent

of a company.

MR. JAY: I can't cite one right now. I --

JUSTICE SOTOMAYOR: I couldn't find one.

MR. JAY: Well, but I can tell you, for

example, that, you know, my friend Mr. Dabney says that

this -- the problems we've raised are hypothetical

problems. This Court has six patent cases this term.

Four of them have LLC defendants in them. And we think

that understanding where an LLC resides is actually a

very important point. LLCs were basically a business

entity that came into existence in about 1979 and really

have only taken off in the last 20 years. Applying the

1897 definition of "inhabitant" carried forward into

1400(b) without this definition doesn't give you that


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answer. And we know that because --

CHIEF JUSTICE ROBERTS: I thought -- I

thought you responded to Justice Breyer by saying that

is an issue that could be dealt with on remand --

MR. JAY: No, Your Honor. What --

CHIEF JUSTICE ROBERTS: -- the difficulty of

determining where an LLC is located.

MR. JAY: No, Your Honor. What I said both

to Your Honor and to Justice Breyer is that it informs

our statutory answer. In other words, this difficulty

is the reason why you should adopt our reading of the

statute and not the other side's. As for if you adopt

the other side's --

CHIEF JUSTICE ROBERTS: It's a difficulty --

again, it's a difficulty you didn't point out to us at

the jurisdictional stage.

MR. JAY: I think there are -- the reasons

to adopt our statutory interpretation are many: The

text, the legislative history, and the structural

considerations. And I think that they are all fair game

here on the merits. We're not -- we're not urging you

to dismiss the case as improvidently granted, but I

think that the practical difficulties with the other

side's statutory interpretation, we're not required to

raise all of those in a brief in opposition in order for


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you to consider why you should adopt our reading on the

merits.

JUSTICE KAGAN: But, Mr. Jay, can I just ask

you -- and this is a clarification question, and maybe I

should know this. But you have the original 1391, which

was the subject of Fourco.

MR. JAY: Uh-huh.

JUSTICE KAGAN: Then you have the 1988

amendment. Then you have the 2011 amendment?

MR. JAY: Correct.

JUSTICE KAGAN: Is it the 2011 amendment

that you think changed things, or is it also the 1988

amendment? And if it's the 2011 amendment, exactly

which words do you think changed the thing?

MR. JAY: So it's both, Your Honor. I don't

think you need to agree with me about the '88 amendment,

but we do think that for corporate defendants, it

changed in 1988. It did not change for noncorporate

defendants in 1988, because those weren't the words that

Congress used.

In 2011, we think that there are four

things -- and I think these are the four differences

that I wanted to talk about with respect to Fourco. We

think that "for all venue purposes" does the work

because that's what the ALI and the House Report told


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you in addition to their plain and unambiguous meaning.

We think that the definition --

JUSTICE KAGAN: So why is "for all purposes"

different from "for venue purposes" or "for purposes of

venue" under this chapter? Why isn't it all the same?

MR. JAY: Well, "for all venue purposes" is

broader consciously than "for purposes of venue" under

this chapter because there are more than 200 venue

statutes that are outside Chapter 87. And Congress and

the ALI wanted to --

JUSTICE KAGAN: Yes, but 1400 was within the

chapter --

MR. JAY: That's right.

JUSTICE KAGAN: -- so the effect was exactly

the same, wasn't it?

MR. JAY: It wasn't because now it's no

longer just corporate defendants. The 2011 amendment

adds to the definition. It provides for a domicile for

individual defendants. It expands the (c)(2) definition

to cover other business entities besides corporations,

which wasn't done in the '88 amendment, and it provides

a rule that slightly tweaks what this Court said in

Brunette. It provides what the rule should be for

defendants who do not reside in the United States.

Now, my friends on the other side say,


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essentially, aliens can be sued in any district. And

that's what the prior statute said. But that's not what

Congress wanted the law to be anymore. Congress wanted

the law to be that a defendant that does not reside in

the United States may be sued in any district.

How do you decide if a defendant resides in

the United States? You apply (c)(1) and (c)(2). All

those definitions tie together. And I think that if --

if Congress had wanted to dispense with -- dispense with

Brunette for patent cases and creates, you know, an

entirely different rule just for patent cases, I think

there, it would have said so. But instead, it wanted to

adopt a cross-cutting definition.

Third point: The definition of venue in

1390. We -- if there's any doubt about what a venue

purpose is, you can look at the definition of the word

"venue." And some statutes that might be considered

venue statutes are excluded from that definition.

They're the ones that regulate the subject matter

jurisdiction of a court and say that, this court and

only this court -- you know, let's say the district

court for D.C. -- shall have jurisdiction to decide .

That's carved out of venue, but the patent venue statute

certainly is not carved out of venue.

JUSTICE BREYER: You asked me this


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question -- answer this. I -- I'm not an expert in this

area, comparatively speaking, so you need -- I need

enlightenment here.

Think of A-1. This section shall govern the

venue of all civil actions brought in district courts.

Okay. So what's an example of one that it doesn't

govern, where the law provides otherwise?

MR. JAY: A special venue statute that

provides that, instead of the -- so if you -- if you

turn the page to 2A, the -- here is the general venue

statute, venue in general. So a special venue statute

that provides that the basis for venue should be, for

example, the plaintiff's residence instead of the

defendant's residence, that is an example of a special

venue statute --

JUSTICE BREYER: So in other words --

MR. JAY: -- by law.

JUSTICE BREYER: B doesn't apply because of

the words in A, except as otherwise provided by law.

MR. JAY: That is exactly --

JUSTICE BREYER: Okay.

MR. JAY: Why Congress put those words

into --

JUSTICE BREYER: A.

MR. JAY: -- general venue statutes in 1948


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MR. JAY: -- and why they are still there

today.

JUSTICE BREYER: Okay. So why, if it

governs B, does it not govern C? The words except as

otherwise provided by law you've just said, and I think

you are absolutely right as far as I understand it.

That those words govern B. They govern A and they govern

B, then why don't they govern C?

MR. JAY: So their function is to prevent B

from swamping a special venue --

JUSTICE BREYER: That might be--

MR. JAY: But so --

JUSTICE BREYER: So -- so -- I know, but B

is in a separate section.

MR. JAY: Yes.

JUSTICE BREYER: And now C is the next

section, so why doesn't it govern that?

MR. JAY: So, two reasons. Number 1 -- I

think the reason that uses the word section is that

previously there were two general venue sections. Some

were in 1391 and there were more for local actions in

1392.

One of the things that Congress did in 2011


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was get rid of 1392, so that's why I think it wrote in

this section shall govern the venue. Now, what does it

mean to govern venue? What it means to govern venue is

to provide, on which, bases venue shall lie.

Plaintiff's residence, defendant's residence,

personal -- principal place of business? There are

venue statutes that do each of those things.

1400(b) it is a special venue statute, and

it says defendant's residence or the conjunctive

definition in the second half. So, this is what

provides -- this is what says look to 1400(b) and not to

the general venue statute in a patent infringement case.

Of course, in a -- in another patent case,

where it's the alleged infringer bringing a declaratory

judgment action, saying that I want a declaration I

don't infringe, that does go under the general venue

provision and there are lots of declaratory judgment

actions brought right now by the prospective defendants

that get to use the general venue provision. They get

to sue patent owners anywhere the patent owner is

subject to personal jurisdiction.

And one virtue of our rule is that it

creates greater harmony between the sort of declaratory

judgment actions which are kind of -- where the

defendant races into the courthouse to sue first, and an


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infringement action brought by the patent owner under

1400(b).

So I -- I hope that I've -- that I've

answered your question about why this doesn't govern --

why this doesn't do the work. But another part of that

answer, which I had promised to get back to the Chief

Justice on, is -- is about why nothing provides

otherwise by law in this case, even if you don't agree

with anything that I've said to this point, and that is

because Fourco interpreted the word residence in 1400(b)

and that's absolutely true. 14 -- it gave it the same

meaning that it had in all the venue statutes in 1897.

Diversity venue, general venue, patent venue. It just

meant inhabitant, and inhabitant had -- it did have a

meaning to corporations. It did have a meaning for

individuals. It didn't have a settled meaning to

unincorporated associations, but we can -- we can come

back to that.

The point is that Congress has now

adopted -- and one thing that my friend said that I --

that I entirely agree with. It is an artificial

definition. It is an artifical definition of residence,

but it did so because it wanted to eliminate nice

distinctions about where in -- particular kinds of

business entities reside using the term as it was used


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in 1897, and it wanted to simplify the inquiry.

You are going to have to answer the personal

jurisdiction question in all of these cases anyway. So

for corporate defendants, giving an additional venue

inquiry about whether they -- where they are doing

business or where they have a regular and established

place of business are additional complications layered

on top of that personal jurisdiction inquiry that you

are going to have to do anyway.

That's why Congress, in 1988, for general

venue, decided to make personal jurisdiction the

touchstone for venue as well for corporate defendants,

and why the ALI, working with the judicial conferences

committee, and then Congress, decided to expand that to

unincorporated associations for all venue purposes in

2011. It's simpler, it's crosscutting, it's not sort of

a patent specific rule, but it is the best rule and it's

the rule that Congress adopted. And --

JUSTICE SOTOMAYOR: So a lot of amici

discussions as to their reasons for why so many suits

are centered in this court in Texas, what is your

reason, why do you think that is true?

MR. JAY: So I think that -- if I understand

your question is, why do people sue -- what are people

suing in this court in Texas or why are so many


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people suing in this court in Texas.

JUSTICE SOTOMAYOR: Is it 1391 or is it

something else?

MR. JAY: Well, it's only 1391 in the sense

that it -- it's a permissible choice, but I don't think

that -- that is an answer to the question of why they

choose that over all other permissible choices.

And I think if there are complaints about

the way things are handled in East Texas, and my client,

Kraft, has been a defendant in East Texas in patent

infringement cases as well. If there are complaints

they tend to be complaints that aren't venue style

complaints. In other words, it's an inconvenient forum

compared to where I am located. They tend to be

complaints about how the cases are managed, how

discovery takes place, how motions practice is handled,

and so on. And those complaints, if they are valid,

would be valid even when venue is indisputably proper

over a Texas defendant. They are problems that should

be dealt with on their own terms rather than by letting

anybody not from Texas out of that district and leaving

everyone else still in the district with -- where the

practice is unchanged.

CHIEF JUSTICE ROBERTS: I -- I didn't

understand that answer. You are saying the problems


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would be there for Texas corporations that actually

reside in that district anyway. So we shouldn't worry

that 25 percent of the nationwide cases are there?

MR. JAY: I'm saying two things, Your Honor.

Number one, I think the complaints about East Texas

aren't really about overcrowding -- and I would like to

answer that as my second point. But that -- rather they

are about the way that the cases are handled, you know,

whether there be, you know, one case or a thousand

cases.

Or -- and we talk about the overcrowding --

JUSTICE KAGAN: But the complaint is that it

allows a kind of forum shopping, right? That it --

you -- let's go down to Texas where we can get the

benefit of a certain set of rules.

MR. JAY: I mean, I think that the same

criticism can be made of the rule that Congress adopted

for the general venue statute in 1988, or for that

matter, the fairly liberal rule that Congress adopted

for corporation in 1948, and patent cases, number one,

don't have the varying circuit law. They have a single

Federal court, appeals court; and number two, they don't

have choice of law problems, you know, so that you can

certainly have forum shopping problems under the general

venue provision quite easily as well. I do think --


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JUSTICE KENNEDY: The general -- generous

jury verdicts enter into this or is that something we

shouldn't think about?

MR. JAY: So I -- I think that the empirics

-- you know, there is a battle in the amicus briefs

about that. I mean, I think that at least one scholar

has said that the outcomes are not significantly

different in cases that go to trial. We don't have a

position on that. We haven't crunched -- crunched the

numbers ourselves. But ultimately we think that --

JUSTICE KENNEDY: But certainly that might

be a perception by the -- by the -- by the bar who

brings -- by the -- those in the bar who bring these

suits.

MR. JAY: It -- it might well be and I --

and it -- certainly that is -- that is the argument that

is being made to Congress, and I think that when

Congress is -- you know, takes up this issue as it has

already been asked to do and it's already been

considering at the committee level. Congress can do

something that this Court doesn't have the ability to do

in this case, and that is to modulate venue in the -- in

a way that is not binary. I mean, in this case you --

you only have two choices.

My friends on the other side say, reside for


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a corporate defendant just means the state of

incorporation, that is it. What Congress can do is

create a definition that doesn't turn on the word

resides at all, I -- or that adds more choices that

could add principal place of business. It can add where

the plaintiff has done research on the invention that is

patented. Those are, in fact, what the proposals look

like. None of the legislative proposals about patent

venue in the last 10 years that I've seen look anything

like what the -- what my friend on the other side are

proposing.

Nobody likes the one place of residence

rule. They all at least offer principal place of

business and some plaintiff-centered venue, and that is

why the empirics say that if you adopt the rule that my

friends on the other side are proposing, you will shift

more than half of all cases from the district where they

now are into other districts. Whereas, if Congress

adopted its current -- the current version of its

reform, nonpracticing entity cases would largely move,

but operating company cases largely would not. Whereas,

if you adopted Heartland's rule, operating company cases

would wind up shifting, and this gets back to my point,

Mr. Chief Justice, they would have to shift to places

like Delaware where lots of defendants are incorporated,


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and if everybody were incorporated in Delaware maybe

that would be okay, but because lots are incorporated in

Delaware and some are not, you have kind of a dual

problem.

You're going to have overcrowding in

Delaware and you're -- you're -- the cases that really

out to be in the same place, you won't be able to bring

in the same place.

CHIEF JUSTICE ROBERTS: Were any -- were any

of these policy considerations addressed by Congress

when it made the change you suggest it made in 2011?

MR. JAY: The policy considerations about

patent -- about where patent venue ought to be?

CHIEF JUSTICE ROBERTS: Yeah.

MR. JAY: No, because it -- Congress decided

that it was going to -- for purposes of residence it was

going to adopt a single definition across the board.

But -- but --

JUSTICE BREYER: I laugh slightly because

if -- if that is so clear what is this case doing here,

and -- and it -- that's why -- that's why I can't cut

one way or the other with that -- that particular

argument. I mean, you would think the patent holders

are a tremendously powerful group of people, businesses

all over the country, and if they had been -- why


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weren't they in Congress? See, that -- that's a

Congressional problem. Why weren't they there saying we

have a problem here, why don't you clarify it? You -- I

don't think you can answer that question --

MR. JAY: I -- I can --

JUSTICE BREYER: -- until I get -- you can?

(Laughter.)

MR. JAY: Well, sure. Because I think --

because I think that the issue is not the definition of

residence. The issue is how do we come up with a

different patent venue statute altogether? And that is

something that Congress has been working on, trying to

come up with something more calibrated, so that, for

example, a research university would be able to bring

suit in its home district, because that's where it did

the invention; it's where the inventor's lab is and so

forth, you know, where they would want to be able to sue

a defendant in its own principal place of business, even

if it doesn't commit the relevant act of infringement

there.

And in particular, because, you know, the --

the second half of the patent venue statute was

interpreted in a way that requires everything to be

conjunctive; in other words, all defendants have to have

committed acts of infringement and have regular and


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established places of business there. You have parent

subsidiary problems. You have problems when you sue on

multiple patents, patents which are infringed at

different times, like the process of making something,

and then the good that is made. Each of those could be

different acts of infringement.

And you also have problems in pharmaceutical

cases. I think one aspect of patent litigation that is

working pretty well is these pharmaceutical cases where

a brand company sues all the generic companies that want

to make a product that's a -- you know, a facsimile of

the brand product.

Congress, in Section 299 of the Patent Act,

recognized that those are an example of cases that

really all ought to proceed in the same district. They

are an exception from the No Consolidation Rule that

Congress wrote in the America Invents Act.

So what's going to happen to those cases?

Number one, there is no act of infringement yet because

the -- or act of infringement that kicks off the lawsuit

is an artificial one. And number two, you won't be able

to sue all those generics in the same district at all.

Right now, a dozen, or even two dozen, cases can all be

brought in the same district. It has to be litigated to

a judgment in 30 months, which is the time -- time


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period that Congress put in the statute. And yet, if --

if you were going to have to be bringing a dozen suits

in a dozen districts, that's going to be significantly

more difficult.

Ultimately, we don't think that these

practical problems are dispositive, because we think the

text and the legislative history, and the reasons why

the ALI wanted to solve the problems that had come up

with the previous versions of the undefined term

"residents" are so clear. Congress wanted a single

definition that would have cut -- cut across all these

statutes.

That might have been --

JUSTICE GINSBURG: Then why did -- why did

Congress reject the ALI proposal to just get rid of

1400(b)?

MR. JAY: Well, I can't cite you a page of

legislative history, for example, but I think it may

well have wanted to continue having a rule that, for

example, requires all defendants to reside in the

district of venue, which is what 1400(b) now -- now

provides. Whereas the general venue provision has

transactional venue, it allows for venue where nobody

resides, and it also allows for venue sometimes where

only one defendant resides.


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But we think that Congress could have gone

through and snipped out all of the venue provisions, or

portions of venue provisions that were left somewhat

superfluous by its adoption of this broad definition of

"resides." The ALI recognizes that would be a mammoth

task, but nevertheless, Congress decided to do it

anyway, and to do it this relatively easy way. And I

think, you know, the Fila venue --

JUSTICE KENNEDY: It seems to me your answer

is quite proper as to 1400(a), but how does your answer

apply to 1400(b)?

MR. JAY: How does it apply in terms of work

left to be done by the rest of the statute?

JUSTICE KENNEDY: Yeah. You -- you -- your

explanation was that they -- they wanted to get rid of

all of these distinctions, but that doesn't -- and that

makes sense so far as (a) is concerned, but I don't

understand how it applies to (b).

MR. JAY: Well, it -- it wanted to get rid

of the idea of different conceptions of residents under

different statutes, and different conceptions of

residents that applied to different types of defendants.

It wanted to have all of that standardized.

Now, that might sometimes result in the word

"resides" in a venue statute swallowing the rest to some


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degree. I think, you know, this Court, next month, is

going to consider the Fila venue provision, 45 U.S.C.

46, I believe. And that venue provision -- it's in the

list, in, I think, footnote 8 of the House report --

that footnote incorporates of venue provisions that

would be encompassed. And it says, "resides or shall be

doing business."

Now plainly, that is subsumed by the

redefinition of "resides," but that is a result that

Congress was comfortable with.

Thank you, Mr. Chief Justice.


Five minutes, Mr. Dabney.

REBUTTAL ARGUMENT OF JAMES W. DABNEY

ON BEHALF OF THE PETITIONER

MR. DABNEY: Thank you, Mr. Chief Justice.

Getting to the point that Justice Breyer

made, the domicile of unincorporated associations,

limited liability companies has not been a problem in

the law for decades. It has been settled.

There's a reason they didn't bring it up in

their brief in opposition. It was never an issue in the

case. And the place in the Joint Appendix I would

direct the Court's attention to is page 20A, which is

the proof of service that they served in this case in


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which the defendant's counsel, in Delaware, filed proofs

of service stating that the nonresident defendants were

served with a notice required by, and -- and identifying

the principal place of business of the defendant.

The idea that you don't know where the

domicile is of a chartered entity is something for which

there is absolutely no evidence in the record. It is --

it is a complete non-problem --

JUSTICE SOTOMAYOR: What do we do with your

adversary's last point about the -- all of the cases,

like the pharmaceutical cases that will be upended and

made completely impractical by ignoring 1391?

MR. DABNEY: I don't believe that -- I

believe that that provision -- that that argument is

overstated, for various reasons.

First of all, to the extent that venue

applies across the board. Of course it will apply to

putative makers of generic drugs as well. The judicial

panel on multidistrict litigation exists to provide for

pre-trial consolidation of proceedings, if that is

appropriate. Many generic companies have waived any

objection to venue by -- potentially by registering to

do business in the places where the brand companies want

to sue. That was the holding in the Corda case in which

this Court denied cert on January 9.


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So it is completely speculative to suggest

that simply upholding what Congress has seen fit to

provide by way of across-the-board venue protection for

patent litigation is necessarily going to prevent

litigation over putative generic drug manufacturers.

Secondly, the -- the Fourco case was one

whose critical holding was not based on the then content

of 1391(c), which, as Justice Kagan correctly pointed

out, whose breadth was no narrower then than it is now.

"For venue purposes," "for all venue purposes," it's

exact; there is no difference there.

What Fourco was so important is that it held

that 1400(b) is freestanding. It is not supplemented by

1391(c). So if we're looking at what 1400(b) means, you

have a -- a word that has been construed by this Court.

That construction has never been overruled or changed by

Congress.

And in the Pure Oil v. Suarez case in 1966,

Justice Harlan wrote for a unanimous Court that 1391(c)

applied to all venue statutes, except where there was a

restriction, and cited Fourco and the patent venue

statute as a specific exception. Why? Because the

structure of 1400(b) that specifically distinguishes

between resident and nonresident defendants makes no

sense, unless the statute is given its original meaning.


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You can sue a defendant in the judicial district where

his domicile is, or if you want to sue somewhere else,

you have to sue somewhere where there is both an act of

infringement and a regular established place of

business. That is what Congress provided.

And -- and it's very revealing that -- that

my opponent cites as one argument for overruling Fourco

is that adoption of -- of the respondent's rule would

make more even-handed patent infringement cases and

actions for declaratory judgment. Well, that is simply

a funnel of salt on 1400(b) itself, because when it

talks about actions for patent infringement, it's

talking about the civil action remedy provided by 35

U.S.C. section 281.

So those are the only kind of actions that

1400(b) applies to. So if there is a -- a problem with

the way Congress wrote the law, that's just too bad.

That's not for a court to come in and -- and overrule

precedent in order to achieve a goal like that.

And I also heard conceded here that,

whatever might be the motivations for filing a patent

suit in a particular jurisdiction, it -- it is conceded

here that it is the interpretation of 1391, and -- and

the disregard of this Court's Fourco decision that has

made all this possible.


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And in -- in one of the papers that was

cited in respondent's own brief, the paper by --

CHIEF JUSTICE ROBERTS: Go ahead and finish.

Finish your point.

MR. DABNEY: The -- the paper by Professors

Chien and Risch, that paper cited on page 52 indicates

that 68 percent of small- and medium-sized businesses

will get venue relief if TC Heartland wins this case.

Thank you.


The case is submitted.

(Whereupon, at 12:09 p.m., the case in the

above-entitled matter was submitted.)


OOffffiicciiaall -- SSuubbjjeecctt ttoo FFiinnaall RReevviieeww

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66

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67

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68

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